KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc.
The Supreme Court ruled that a business relying on the 'fair use' defense to a trademark infringement claim does not have to prove that its use of a descriptive term creates no risk of confusing customers.
The decision resolves a split among federal appeals courts over who bears the burden on consumer confusion, making clear that the burden always stays with the trademark holder bringing the infringement claim, not the party accused of infringing.
How it got here: A federal trial court granted summary judgment for KP based on the fair-use defense; the Ninth Circuit reversed, and the Supreme Court agreed to resolve a circuit split.
The Case in Depth
What happened
Two companies that sell permanent makeup, KP Permanent Make-Up and Lasting Impression, both used versions of the term 'micro color' to describe their products. Lasting had registered 'Micro Colors' as a trademark, which later became legally unchallengeable after years of use. When KP kept using 'microcolor' in its marketing, Lasting accused KP of trademark infringement, and KP argued its use was merely a fair, descriptive use of common words.
The question before the Court
When a company defends against a trademark infringement claim by saying it was just using a descriptive term fairly, does it have to prove its use isn't confusing customers?
Why it matters
Businesses that use common, descriptive words in advertising or on packaging—like 'micro color' for a cosmetic pigment—can keep doing so without having to affirmatively disprove any chance of customer confusion. Trademark holders retain the full burden of proving confusion is likely, which makes it harder for them to shut down competitors' use of ordinary descriptive language.
What changes now
The case goes back to the lower courts, which had incorrectly required KP to prove there was no likelihood of confusion. On remand, the courts must reconsider the fair-use defense without placing that burden on KP, while still weighing the degree of any possible confusion as one relevant factor among others, and sorting out specific factual disputes about KP's different uses of the term over time.
What this does not decide
The Court did not decide whether KP's use of the term was actually fair, whether any confusion was in fact likely, or how much weight confusion should get in the fair-use analysis. It also left open other possible considerations, like commercial justification, without deciding whether they apply here.
How the Court got there
The legal reasoning, step by step
- The Court started from the text of the trademark law: the party accusing someone of infringement always carries the burden of proving that the accused use is likely to confuse consumers about where the product came from, even when the trademark is legally unchallengeable.
- The Court then looked at the separate provision creating the fair-use defense, which lets someone use a descriptive term fairly and in good faith to describe their own goods, and noted that this provision says nothing at all about confusion.
- Applying the principle that Congress's choice to include a requirement in one part of a law but leave it out of another part is intentional, the Court concluded that Congress did not mean to add a hidden requirement that a defendant disprove confusion.
- The Court also reasoned that placing such a burden on defendants made no logical sense: a defendant does not need to affirmatively disprove an element the plaintiff must already prove, since simply casting doubt on the plaintiff's case is enough to win.
- The Court recognized that some degree of consumer confusion has always been tolerated when a common descriptive term is also used as a trademark, so a fair-use defense can succeed even if some confusion is possible.
- The Court concluded that while a defendant need not disprove confusion outright, how much confusion a use is likely to cause can still be one of several factors weighed in deciding whether an overall use counts as fair.